The Trademark Modernization Act of 2020 (TMA) creates new tools for trademark owners to remove conflicting third-party applications and registrations from the USPTO database on the grounds […]
Trademark registration is a legal proceeding that begins with a filing of an application at the USPTO. As such, it involves a legal determination of compliance with substantive and procedural statutory rules for registration. The process may take up to a year or longer, depending on the application’s filing basis and the occurrence and complexity of various objections to registration made by the examining attorney or by third parties. Not every application matures into a registration. The USPTO does not refund application filing fees because of failure to register a mark. An applicant must always demonstrate use in commerce before being granted a registration certificate.
A trademark registration can have a potentially unlimited duration provided that required maintenance documents are timely filed. These documents are: (i) the Declaration of Continued Use or Excusable Nonuse under Section 8, known as a §8 declaration; and (ii) a subsequent periodic Combined Declaration of Continued Use and Application for Renewal under Sections 8 and 9, known as a combined §§8 and 9 declaration. A registrant may also submit an optional one-time Declaration of Incontestability under Section 15 of the Lanham Act to claim that a mark registered on the Principal Register has become incontestable when the requirements of that section have been satisfied.
Success in registering a mark does not prove the owner’s right to use the mark. Sometimes a registrant’s use of a mark occurs after another person has already adopted the same or a similar mark on related goods or services and has acquired superior common law rights in the mark. The senior user may then instigate legal action to prevent dual use of the marks and hinder the new comer from obtaining greater rights than its own. It is incumbent on senior users of either common law or federally registered marks to police their marks against both willful and non-willful infringement by junior users because failure to do so may result in forfeiture of some or all of their exclusive rights in a mark.
Trademark is an area of law that necessarily involves dealing with administrative, transactional, and civil litigation issues all at once.
Trademark selection requires careful consideration of potential likelihood of confusion conflicts with other marks that may prevent registration or provoke opposition, cancellation, infringement, or dilution claims by third parties. In addition, trademark management decisions throughout the life cycle of firms must take into account all legal aspects of contemplated transactions in order to prevent loss of rights and to maximize benefits.
Dean IP Law represents clients in federal administrative proceedings before the USPTO including applications, Trademark Trial and Appeal Board (TTAB) opposition and cancellation proceedings, as well as in appeals from refusals of registration made by examining attorneys. The firm also prosecutes California state trademark applications at the Secretary of State’s office.
Intellectual Property Transactions
The office also handles drafting of assignment, sale, licensing, and co-existence agreements in addition to counseling on disposal and monetization of intellectual property assets.
Although a thorough search coupled with a detailed analysis of potential risk of liability for trademark infringement reduces the likelihood of being sued for using a mark, third party claims for trademark infringement or dilution can be unpredictable. Counsel at Dean IP Law prepares responses to cease-and-desist letters, provides case evaluations, and represents parties in adversarial proceedings in federal court in the Central District of California.
Unbundled legal services related to the registration or maintenance of trademark rights may be obtained on a flat-fee basis under a written arrangement.
Trademark searching, filing of domestic, state, or international applications, and preparing responses to Office actions or appeals from refusals of registration can all be provided for a fixed price and under a limited-type of representation agreement.
Assistance with additional tasks applicable to the management of registrations, such as submitting declarations, recording registrations with U.S. Customs and Border Protection, or executing various trademark transactions is also offered as a one-time service option.
Legal work for representation during opposition, cancellation, or civil litigation proceedings is more complicated and time-consuming, but it may sometimes also be handled for a flat fee – the amount of which will be determined based on the nature of the case. Consider this further Information for Litigants if your trademark rights have been disputed by a third-party.
Searching for conflicting marks before filing a trademark application is essential to preventing future disputes and avoiding unnecessary expenses. Conducting a trademark search involves uncovering all registered and earlier-filed pending marks at the USPTO that might provoke a likelihood of confusion refusal, opposition or cancellation. It is also necessary to look for confusingly similar unregistered common law marks used on related goods or in connection with comparable services because the rights vested in those marks may be superior to those based on registration. Trademark searching is complex and requires examining multiple databases and Internet records to determine potential difficulties to registration and enforcement of legal rights.
Price: FREE Search of the USPTO Database Included in the Application Filing Price
Trademark applications are submitted electronically through the USPTO website. Only one mark per application is allowed so that registration of different versions of the same mark may necessitate filing of additional applications. Government filing fees are calculated per class and vary based on the type of application used. Each application is assigned a filing date, which determines priority among applications. Priority created by a filing date is not absolute and may be challenged later. Applications may be filed based on either "use in commerce" or "intent to use" a mark in commerce. For a timeline of the application process and for some extra filing guidance, view Application Resources.
Price: $289 Plus Government Filing Fees Calculated per Class
Refusals under sections 1, 2(a), 2(b), 2(c), 2(d), 2(e)(1)-(5), 3, 6, 23(c) and 45 of the Lanham Act, issued by an examining attorney during the prosecution of an application require a substantive response from the applicant. Not all such refusals can be overcome and some of the challenges presented in an Office action may prevent an application from maturing into a registration.
Price: $690 for a Substantive Response to an Office Action
Companies conducting business internationally or simply having their products manufactured abroad may benefit from registering their marks in foreign jurisdictions, especially because outside of the common law system, registration is the only means to protect trademark rights. Even firms that are still in the planning stage of expanding beyond U.S. markets should consider filing an international application, particularly when claiming priority rights under the Paris Convention would be relevant. See additional information about filing an International Application.
Price: $600 Plus Government Filing Fees Calculated per Class
A Section 8 declaration must be filed on a date that falls on or between the 5th and 6th anniversaries of the registration. A combined §§8 and 15 declaration may instead be filed on such a date if a mark registered on the Principal Register has been continuously used in commerce for 5 consecutive years after the date of registration. A Section 8 declaration must subsequently be filed on a date that falls on or between the 9th and 10th anniversaries of the registration, and each successive ten-year period thereafter. A ten-year Section 8 declaration may be combined with a Section 9 renewal application as the time for filing both forms coincides.
Price: $300 for Single/Combined Form Plus Government Filing Fees Calculated per Class
Recording a trademark registration with U.S. Customs and Border Protection (CBP) can provide advantages to manufacturers of goods concerned about counterfeiting, gray market or stolen goods problems, or supply chain leaks.
Price: $135 Plus Government Filing Fees Calculated per Class
Ask for legal advice or representation in your trademark case if your IP rights are at stake.
As an advocate for trademark owners' rights, Dean IP Law helps businesses increase the economic value of their goods and services.
Dean IP Law is a boutique intellectual property law practice that handles trademark prosecution, licensing, and enforcement cases. Founded in 2017 with the goal of assisting both start-up and mature business entities with protecting their trademark assets, it is exclusively dedicated to advising clients about registering, using, and enforcing their rights in a mark. Recognizing that the process of registering a mark with the USPTO or in a foreign jurisdiction can present various challenges, including substantive refusals and oppositions, and that use of a mark can infringe the intellectual property rights of competitors, its counsel puts great emphasis on problem avoidance and conflict prevention. In cases involving likelihood of confusion claims, the attorney employs different strategies to resolve conflicts effectively and efficiently, including negotiating settlements and taking advantage of accelerated case resolution options.
Dean IP Law prosecutes trademark applications on behalf of clients both domestically and internationally via the Madrid Protocol. Its principal attorney conducts clearance searches of the USPTO database, handles responses to office actions, and represents both plaintiffs and defendants in TTAB proceedings.
IP Asset Management and Licensing
In addition to advising clients about trademark registration matters, Dean IP Law extends services to intellectual property portfolio management and licensing. It routinely monitors competitors’ marks for infringement, files required maintenance documents for clients, assists business operations with developing commercialization plans, and prepares assignment and licensing agreements.
Due to the increasing awareness of intellectual property rights, surge in trademark applications by companies from a myriad of industries, and the blurred lines of territorial use of marks in cyberspace, clashes based on priority rights become inevitable. Dean IP Law works zealously to enforce or defend the rights of its clients in negotiations, Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings, and even in court actions.
As an attorney, I aim to provide useful legal advice to my clients and to increase their effective use of intellectual property.
Dessie focuses her practice on all aspects of trademark protection, including prosecution of applications before the USPTO, defense of rights in administrative and federal court proceedings, and counseling regarding use of marks online and in the traditional marketplace. She conducts domestic and international clearance searches on behalf of clients in a variety of industries. She also works with companies on raising intellectual property rights awareness and developing successful brand enforcement strategies.
J.D. California Western School of Law (2012)
B.A. University of California, Los Angeles (2005)
U.S. District Court Central District of California (2018)
The Dean IP Law Blog features tidbits and articles on legal topics concerning trademark owners. Blog posts should not be construed as legal advice nor could they be used to create an attorney-client contract.
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